2016 Highlights for the PTAB

Here are the highlights of 2016 for the PTAB, starting with a case decided on the last day of 2015 that found that the board actually does not need to consider timely submitted evidence that a party has a right to submit.

• Tradestation Group v. Trading Technologies Int’l—The PTAB institutes a CBM proceeding on a graphical user interface, which is covered by multiple patents in Europe. This is despite the AIA legislative history clearly saying GUIs are not business method patents subject to CBM, and despite the fact that GUIs are not a business method and offer a technological solution. (PTAB, January 27).

• Synopsys, Inc. v. Mentor Graphics Corp.—The PTAB has discretion to institute an IPR and issue a written decision on a subset of challenged claims (federal circuit, February 10).

• USPTO announces David Ruschke (formerly of Medtronic) as the next chief administrative patent judge, effective May 23.

• Cuozzo Speed Technologies v. Lee—The PTAB can apply the broadest reasonable interpretation of patent claims in an IPR; decisions to institute an IPR are not appealable to federal courts. (Supreme Court, June 20).

• In re Magnum Oil Tools Int’l—The PTAB Improperly shifted the burden of proof on obviousness to the patent owner in IPR (federal circuit, July 25).

• Arendi S.A.R.L. v. Apple, Inc.—The federal circuit rules that common sense is not a substitute for reasoned analysis and evidentiary support (federal circuit, August 10).

• Unwired Planet v. Google—Federal circuit slams PTAB for using the wrong definition of CBM patent, which would make virtually every patent a covered business method (fed – eral circuit, November 21).

• In re Aqua Products—On December 9, the federal circuit sat en banc to hear arguments in In re Aqua Products, Inc. on the burden of proof applicable to motions to amend patent claims during an inter partes review.